Synergy Partners Law Firm LLC | View firm profile
Nurzhan Stamkulov, Aidana Satimova
Lawyers, Synergy Partners Law Firm
Often we face with the fact that the domain name violates the trademark rights of the owner. For example, someone registers a website with a domain name synergy-partners.kz, violating the rights to a trademark owned by Synergy Partners Law Firm LLC. Trademark owners have a question how to protect their trademark rights and which laws regulate this question.
In the Republic of Kazakhstan, the rules for using a domain name are governed by the Rules for registration, use and allocation of domain names in the space of the Kazakhstan segment of the Internet (hereinafter – the Rules).
However, the Rules do not provide following moments:
During submission of an application for domain name registration, the submission of documents confirming the trademark rights is not mandatory.
Thus, during registration of a domain name, trademark rights are not checked, which makes it possible for registrants to violate intellectual property laws.
According to the Dispute Resolution Policy of the Kazakhstan Network Information Center, in case of disputes concerning the violation of trademark rights by a domain name, the trademark owner must initially send a claim to the domain name owner. The claim must indicate that the domain name violates the rights of the trademark owner and describe the legal damage caused to the trademark owner. Without a complaint, registrars of domain names do not take any action to resolve the dispute.
But in practice, we faced with the fact that registrars do not set any restrictions on the transfer of a domain name. Thus, after receiving a claim, the domain name owner transfers the domain name to another owner, removing any responsibility. And the trademark owner must again send a claim to the new owner. Accordingly, such cat-and-mouse games can continue forever, and registrars do not take any actions to resolve this situation.
Taking into account the above, we suggest the following ways to improve the legislation regarding domain names:
1. During application for domain name registration, the applicant must provide documents confirming his trademark rights. If he is unable to provide them for any reason, then:
2. Applicant signs an agreement according to which:
a) if a complaint is filed for trademark infringement and the applicant unable to provide documents confirming the trademark rights, then registrars may restrict the transfer of the domain name;
b) the disputed domain name enters the “Hold” state and cannot be used by any of the parties until the dispute is resolved.
c) registrars have the authority to terminate the operation of the disputed domain name if documents are submitted confirming that the disputed domain name violates the trademark rights of the rightful owner.
We recommend you to collect evidence of trademark infringement correctly, i.e. relevant screenshots, documents confirming the rights to trademark protection in the Republic of Kazakhstan.